Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/506749

 

            The assigned examining attorney has reviewed the referenced application and determined the following.

 

I.            OFFICE RECORDS

 

            The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

II.       REFUSAL – FAILURE TO FUNCTION AS A MARK

 

           The examining attorney refuses registration on the Principal Register on the ground that the proposed mark is used solely as a model, style or grade designation rather than as a trademark for the goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.10.  Subject matter used solely as a model, style or grade designation within a product line does not function as a trademark.  In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (alphanumeric designations, such as “5-469X,” held unregistrable for universal joint couplings; evidence insufficient to establish distinctiveness and recognition as a mark).  In this case, the applicant has also applied for several companion applications in connection with the same type of goods, and those companion applications reveal that the applicant is using a series of numbers as model, style or grade designations within a line of automobile steering wheels and related products.  Accordingly, the examining attorney is compelled to refuse registration under §1, 2 and 45 of the Trademark Act.

            Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

III.      IDENTIFICATION OF GOODS

 

            The wording “related products” in the identification of goods is unacceptable as indefinite.  TMEP section 804.  The applicant must amend the identification to specify the commercial name of the goods, and if there is no common commercial name for the products, the applicant must describe the products and their intended uses in greater detail. TMEP §1402.01.  The applicant may, for example, adopt the following identification, if accurate:

 

In International Class 1;  power steering fluid.

 

In International Class 12;  automobile steering wheels, and parts and fittings therefor.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

             For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual can be found online at: http://www.uspto.gov/web/offices/tac/doc/gsmanual/.  It offers a searchable list of acceptable identifications and classifications, and although it is not an exhaustive list, it is nonetheless a very useful guide in formulating acceptable identifications. 

 

IV.       REQUIREMENTS OF A MULTI-CLASS APPLICATION

 

            If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list them by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date. 

 

(3)  The applicant must submit the dates of first use and first use in commerce and one specimen for each class.  In this case, the applicant has submitted dates of first use and only one specimen for the goods in International Class 12.  The dates of use must be at least as early as the filing date of this application.  37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application.   

 

 (4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).  The following is a properly worded declaration under 37 C.F.R. Section 2.20. 

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

            _____________________________                                   

               (Signature)

            _____________________________

            (Print or Type Name and Position)

            _____________________________

                  (Date)

 

V.            CONCLUSION

 

            If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.

 

 

 

 

 

/Nicholas K.D. Altree/

Trademark Attorney

Law Office 108

(703) 308-9108, ext. 132

Fax: (703) 746-8108

nick.altree@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.